Protection of colours as trade marks

The UK Intellectual Property Office (UK IPO) recently considered an opposition by Nestlé to Cadbury’s UK trade mark application which sought to register a shade of purple (Pantone 2685C) as a UK trade mark.

It is recognised that under UK and EU trade mark law it is possible to protect a mark which consists of a single colour, subject to the usual requirements for registration being met. Whilst an application for a colour trade mark should not be subject to more rigorous checks than an application for a word or device mark, one of the difficulties of protecting a colour as a trade mark is that whilst a colour per se may have distinctive character, colour is not normally used by traders as a means of brand identification. Therefore consumers are not in the habit of making assumptions about the origin of goods and services based solely on their colour, or the colour of their packaging. It follows that single colours will be capable of denoting the origin of a product or service only in exceptional circumstances.

Nestlé had attacked Cadbury’s mark on the basis that the mark was devoid of distinctive character, designated a characteristic of the goods (namely the characteristic of having purple packaging), and had not acquired a
distinctive character through use, and also submitted that the colour purple is commonly used in trade for the goods.

Cadbury conceded that the mark was not distinctive per se but contended that it had acquired distinctiveness through use. The UK IPO decided that the evidence filed by Cadbury showed that the mark had acquired distinctiveness in relation to chocolate per se, i.e. in bar and tablet form and also drinking chocolate. However, this was not the case in respect of the other goods for which protection was sought, such as chocolate assortments, confectionery and cakes. Therefore Nestlé’s opposition was partly dismissed and Cadbury has been asked to amend its specification of goods accordingly.

This decision shows that the scope of protection afforded to a trade mark involving a single colour will be strictly interpreted but that it is nonetheless possible to obtain such a registration.